Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed on November 26th, 2025 has been entered. Claim 1 and claim 2 are pending in the application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 and claim 2 are rejected under 35 U.S.C. 103 as being unpatentable over Hulse (US 20140261565 A1).
With regard to claim 1 and claim 2, Hulse discloses cleaning methods and solvent compositions (see Abstract). Hulse further discloses a method of providing a solvent composition comprising at least 50wt% of 1233zd (see claim 1) and the method step of contacting the composition with a metal part of an aircraft through spraying (see claim 2). Hulse further discloses HCFO-1233zd as general 1-chloro-3,3,3-trifluoro-propene and further teaches HCFO-1233zd includes within its scope cis HCFO-1233zd, also referred to as 1233zd(Z) (see [0020]). Hulse further teaches the composition may consist essentially of either 1233zd(E) or 1233zd(Z) (see [0022]), which were found to provide unexpected advantageous properties when used (see [0022]). While the examples disclosed describe further solvents, such as methanol (see Examples 150-152) or ethanol (see Examples 154-156), the combination disclosed in the instant claims would have been obvious as Hulse states that the composition may consist essentially of 1233zd(Z). The reference does not explicitly state only two components, however, Hulse states that according to some aspects of the invention, the solvent includes a co-solvent (see [0025]). This is stated as “some aspects” and therefore would lead to a conclusion that not all aspects of the invention must contain this co-solvent. Lastly, Hulse discloses the method may comprise spraying a metal part utilizing the above solvent as a propellant or pressurized gases, such as nitrogen and carbon dioxide (see [0025]).
Response to Arguments
Applicant's arguments filed November 26th, 2025 have been fully considered but they are not persuasive.
Applicant argues Hulse is directed toward a composition comprising 1233zd(E). Further, Applicant argues that Hulse states that 1233zd(E) and 1233zd(Z) are identical. Applicant further cites to Table 1 of Hulse as evidence of the preference for 1233zd(E) with regard to Hulse.
First, the entire reference must be considered. Hulse teaches the composition may consist essentially of either 1233zd(E) or 1233zd(Z) (see [0022]). Therefore, the composition of Hulse described in Table 1 could be comprised of 1233zd(Z).
Regardless of the property differences between 1233zd(E) and 1233zd(Z), Hulse teaches the composition may consist essentially of either 1233zd(E) or 1233zd(Z) (see [0022]). Any detracting properties of 1233zd(E) are moot as Hulse discloses the composition may be composed of 1233zd(Z) instead. Therefore, one having ordinary skill in the art would find it obvious to utilize either 1233zd(E) or 1233zd(Z) based on the teachings of Hulse.
Applicant further argues that Hulse fails to disclose the claimed remarkable effect of enabling extremely efficient and safe cleaning. Hulse teaches the composition may consist essentially of either 1233zd(E) or 1233zd(Z). Hulse further discloses a method comprising spraying a metal part utilizing the above solvent as a propellant or pressurized gases, such as nitrogen and carbon dioxide (see [0025]). Therefore, one having ordinary skill in the art would conclude that 1233zd(Z) and nitrogen or carbon dioxide may be utilized together in an aerosol composition.
Lastly, Applicant argues that Hulse fails to disclose the abovementioned remarkable effects. Even if this argument was found to be persuasive, which the Examiner does not concede, the Applicant has failed to disclose the exact parameters which cause these remarkable results. The examples in the instant specifications are not commensurate in scope with the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY SHARON HARRIS whose telephone number is (571)270-1390. The examiner can normally be reached 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.S.H./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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